India
Trademark Registration Process

INDIA TM BY XTERRA EDZE-02

01.   INITIAL TRADEMARK SEARCH

Mahtta & Co. strives to make the the trademark registration process smooth. We offer to conduct a free trademark search for your proposed mark to give you an idea of how registrable your mark is in India.

02.   PREPARING YOUR APPLICATION

If the search results are positive and the mark looks registrable, we can start preparing your trademark application.

To help us prepare your application, we’ll need to know:

- Name of the Mark/ Logo/ Device prints or Visual Representation
- Name of the Applicant
- Address and Nationality of the Applicant
- Type of Company i.e. Proprietorship, Partnership, Body Incorporate, LLP, or other
- Specification of Goods and Services (accordingly we will check the class under which your goods and services fall)
- User date of the mark (whether the mark is in use or proposed to be used in India)
- General/ Specific Power of Attorney is required

03.   FILING YOUR APPLICATION

- Next your application will be filed with the Trademark Registry Office India and we will drop you an email confirmation of the filing.

- You will receive a trademark application number, You can check the status of your application anytime on the website with this application serial number.

Please note, we cannot change the mark that you register for, or the goods listed in your application once you file. For this reason, the goods listed in your application must be an accurate description of your actual products.

04.   EXAMINATION

After an application is filed, it is examined by the examiner for any discrepancies. The examiner might accept the trademark absolutely, conditionally, or object if they find any discrepancy. The examiner may raise objections under either Section 9, Section 11 or both. On the grounds, of distinctiveness, possibility of deceptiveness and conflicting trademarks the examiner may also raise objections under formal requirements. For example, incorrect or insufficient filing of documents can also be a ground for objection, which may delay the trademark registration process. As per the trademark rules, a month would be given to fulfill the requirements or respond to the objections.

If accepted unconditionally, the trademark gets published in the Trademark Journal. If not accepted unconditionally, the conditions to be fulfilled by filing reply to provisional refusal or discrepancy issued by the examiner in examination report. As per trademark rules, a month would be given to fulfill the requirements or respond to the objections or provisional refusal.

Once such a response is accepted, the trademark is published in the Trademark Journal. If the response is not accepted, the Examiner can put the mark for show cause hearing. However, You can also apply for an adjournment in show cause hearing, by filing a TM-M form. You can file for max. 2 adjournment hearing. If the examiner feels that the trademark should be allowed registration in the hearing, it proceeds for publication in the Trademark Journal.

Section 9: Trademarks which cannot be registered:

  1. If the trademark includes any geographical regions, monuments, etc.
  2. If the trademark describes kind, quality and nature of your product;
  3. Which comprises or consists of any scandalous or absence matter; or
  4. The mark which contains any matter likely to hurt the religious susceptibilities of any class of the citizens of India
  5. Which is identical with, or is an imitation of, or contains as an element, an armorial bearing, flag or other emblem, a name or abbreviation or initials of the name of, or official sign or hallmark adopted by, any state or international organisation created by an international convention, charter or other instruments, unless authorised by the competent authority of that state or organisation

Section 11: The Registrar may accept or refuse the application subject to the provisions of the ordinance. A trademark application in India can be refused/ objected by the Registrar on the following grounds:

  1. The mark is similar/ identical to an earlier trademark for the same or similar goods/ services.
  2. The use of which would be likely to deceive or cause confusion
  3. The application is made in bad intention and faith

05.   TRADEMARK PUBLICATION

The publication step is incorporated in the trademark registration to provide an opportunity for others to oppose the registration. So, anyone who wishes to object to the trademark registration has the chance to file opposition on the same. If, after four months from publication, there is no opposition, the trademark proceeds for registration.

If, however, a person has filed an opposition, the applicant needs to reply with a counter statement within two months. Subsequently, both parties can submit their evidence by way of an Affidavit. Finally, the Registrar decides the order after hearing from both parties.

If the registrar decides in the favor of the applicant, then the mark proceeds for registration.

06.  OPPOSITION PROCESS

On publication of the trademark in the Trademarks journal, Any person has the opportunity to file a notice of opposition against the registration of a trademark within a four-month period.

WRITTEN SUBMISSION

In the event that the applicant receives an opposition from a third party within the 4-month timeframe, they are obligated to file counter statement within 2 months after receiving the opposition notice. Failure to submit a counter statement within this period will lead to the trademark application's status being changed to "Abandoned" by the trademark registry, If counter is received then the opponent will have to file there evidence within two months from counter statement notice. Failure to File to same will lead to abandonment of opposition. Once the evidence is filed, one copy of same is to be submitted to applicant and then applicant will have to file their evidence within two months of receiving of evidence. The opponent's rebuttal time of one month begins upon receiving the evidence submitted by the applicant.

Note- For filing the evidence extension of one month is allowed by paying extra fees.

OPPOSITION HEARING

This marks one of the final stages in trademark opposition process. During this phase, both parties are granted the opportunity to present their arguments and propositions. Following a thorough examination of both sides' arguments, a hearing officer will issue an appropriate decision. If the decision favors the applicant, the trademark will be successfully registered. Conversely, if the decision goes against the applicant, the trademark will be denied. In the event of a rejection, the applicant will be required to initiate the trademark registration process from the beginning.

09.  REGISTRATION OF THE MARK

The application shall proceed to registration where there is no opposition or where the opposition was filed and was decided in favour of the applicant. The mark is then registered for a period of 10 years from the date of filing of the application and the registration certificate is issued.

Now that your trademark is registered, you can put registered mark symbol:  ®

10.  TERM AND RENEWAL

The trademark can be renewed from time to time for 10 years by payment of renewal fees, failing which the marks becomes liable to be removed from the Register on account of non-renewal. Each renewal term is for a period of 10 years.